United States Patent and Trademark Office OG Notices: 30 December 2003
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
RIN 0651-AB61
[Docket No.: 2003-P-021]
January 2004 Revision of
Patent Cooperation Treaty Application Procedure
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule and correction to final rule.
SUMMARY: The United States Patent and Trademark Office (Office)
published a final rule in the Federal Register of October 20, 2003,
revising the rules of practice in patent cases to conform them to
certain amendments made to the Regulations under the Patent Cooperation
Treaty (PCT) that will take effect on January 1, 2004. This document
corrects three errors in that final rule, and also corrects an
additional error in the rules of practice in patent cases relating to
PCT procedure.
EFFECTIVE DATE: January 1, 2004.
FOR FURTHER INFORMATION CONTACT: Richard R. Cole, Legal Examiner,
Office of PCT Legal Administration (OPCTLA) directly by telephone at
(703) 305-6639, or by facsimile at (703) 308-6459.
SUPPLEMENTARY INFORMATION: During the September-October 2002 meeting of
the Governing Bodies of the World Intellectual Property Organization
(WIPO), the PCT Assembly adopted various amendments to the Regulations
under the PCT that enter into force on January 1, 2004. The Office
published a final rule in the Federal Register of October 20, 2003 (68
FR 59881), entitled "January 2004 Revision of Patent Cooperation
Treaty Application Procedure," revising the rules of practice in
patent cases in title 37 of the Code of Federal Regulations (CFR) to
conform them to the amendments to the PCT Regulations that will take
effect on January 1, 2004. This document corrects errors to Secs.
1.14, 1.421, and 1.431 in that final rule. This document also corrects
an additional error in Sec.1.14 relating to PCT procedure.
Discussion of Specific Rules
Section 1.14: Section 1.14(g)(1)(ii) is corrected to change
"International Search Authority" to "International Searching
Authority". Section 1.14(g)(5) is amended to change "paragraphs
(a)(1)(i) through (a)(1)(vi) and (i)(3) of this section" to
"paragraphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of this section"
for consistency with the changes to Sec.1.14 in the rule making
Changes to Implement Electronic Maintenance of Official Patent
Application Records, 68 FR 38611 (June 30, 2003), 1272 Off. Gaz. Pat.
Office 197 (July 29, 2003) (final rule).
Section 1.421: Section 1.421(a)(2) is amended to correct "a fee
amount equivalent to that required by Sec.1.445(a)(5)" to "a fee
amount equivalent to that required by Sec.1.445(a)(4)" for
consistency with Sec.1.445 as amended in the final rule being
corrected by this document.
Section 1.431: Section 1.431(c)(2) is corrected to change "the 25%
of the international filing fee" to "fifty percent of the
international filing fee" for consistency with the change to PCT Rule
16bis.2(b) that was adopted during the September-October 2003 meeting
of the WIPO Governing Bodies and that enters into force on January 1,
2004.
In rule FR Doc. 03-26338, published on October 20, 2003, make the
following corrections and 37 CFR part 1 is amended as follows:
Sec.1.14 [Corrected]
1. On page 59886, in the third column, Sec.1.14, paragraph
(g)(1)(ii), line 8, correct "International Search Authority" to read
"International Searching Authority".
Sec.1.431 [Corrected]
2. On page 59887, in the third column, Sec.1.431, paragraph (c)(2),
line 2, correct "the 25%" to read "fifty percent".
PART 1--RULES OF PRACTICE IN PATENT CASES
3. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
4. Section 1.14 is amended by revising paragraph (g)(5) to read as
follows:
Sec.1.14 Patent applications preserved in confidence.
* * * * *
(g) * * *
(5) Access to international application files under paragraphs
(a)(1)(i) through (a)(1)(vi) and (g)(3) of this section will not be
permitted with respect to the Examination Copy in accordance with PCT
Article 38.
* * * * *
5. Section 1.421 is amended by revising paragraph (a)(2) to read as
follows:
Sec.1.421 Applicant for international application.
(a) * * *
(2) Has no residence or nationality indicated, applicant will be so
notified and, if the international application includes a fee amount
equivalent to that required by Sec.1.445(a)(4), the international
application will be forwarded for processing to the International
Bureau acting as a Receiving Office (see also Sec.1.412(c)(6)).
* * * * *
November 24, 2003 JAMES E. ROGAN
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office